Supreme Law Intellectual Property Dispute Determination Rules | Patent Litigation China Knowledge Bureau's handling of litigation procedures after patent invalidation.

1. the source of the problem

(I) the impact of res judicata on patent invalidation decisions is very complex.

According to the provisions of Article 47, paragraph 2 of the Patent Law, the decision to declare a patent right invalid shall not have retroactive effect on the judgment and mediation statement of patent infringement made and executed by the people's court before the patent right is declared invalid. The decision to invalidate a patent right here should be understood as a legally binding decision to invalidate the patent, not simply a decision of the State Knowledge Bureau, I .e. if the party initiates a judicial review of the invalidation decision, it is necessary to wait for the patent invalidation administrative litigation to determine that the patent is invalid. However, the judgment on which of patent invalidation and patent infringement judgment shall still be based on the date on which the Patent Reexamination Board makes a decision on the request for patent invalidation.

Article 29 of Interpretation II of Patent Disputes is a provision on applying for retrial based on an invalid decision that has not yet been subject to judicial review (Article: After the decision to declare the patent right invalid is made, the parties apply for retrial in accordance with the decision and request to revoke the patent infringement judgment or mediation statement made by the people's court but not executed before the patent right is declared invalid, the people's court may rule to suspend the retrial review and suspend the execution of the original judgment and the mediation statement.) In practice, the proportion of decisions made by the Patent Reexamination Board to declare the patent right invalid being overturned by the people's court judgment is relatively low. Even if the invalid decision has not been judicially reviewed, in order to reduce the execution reversal caused by the continued execution after the patent is finally invalid, the invalid decision is still given the effect of opposing the judgment and mediation statement to a certain extent, that is, the "ruling to suspend the examination" stipulated in paragraph 1 of the article, and suspend the execution of the original judgment and mediation statement ". Since the patent invalidation decision has not yet been judicially reviewed, in order to balance the enforcement interests of the patentee and the infringer and avoid the possible side effects of suspending the enforcement of the original judgment and mediation agreement, refer to the provisions of Article 16 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Enforcement Procedure of the the People's Republic of China Civil Procedure Law on Objection, and Article 29, paragraph 2, of Interpretation II, in the case of the people's court has ruled to suspend the execution, the patentee may request to continue the execution after providing the guarantee. In this regard, the infringer may request a stay of execution through a counter-guarantee to check and balance. When the patent right is finally determined to be valid, the people's court may enforce the guarantee or counter-guarantee property in order to avoid the loss of enforcement interests.

Article 30 of the Judicial Interpretation II of Patent Disputes is a provision on applying for retrial or termination of enforcement based on a patent invalidation decision that has not initiated judicial review or has been terminated by judicial review (Article: The decision to declare patent invalidation shall not be filed with the people's court within the statutory time limit or the decision shall not be revoked by the effective judgment after the prosecution, and the parties shall apply for retrial according to the decision, where a request is made to revoke a judgment or mediation statement on patent infringement made by the people's court before the patent right was declared invalid but not enforced, the people's court shall retry it. According to the decision, if the parties apply for the termination of the execution of the patent infringement judgment or mediation statement made by the people's court but not executed before the patent right is declared invalid, the people's court shall rule to terminate the execution.). Although the judgment document for determining patent infringement has not been revoked, but the infringed patent right identified in the document has been declared invalid according to law, if the defendant can only apply for termination of execution after the original infringement judgment is revoked through the trial supervision procedure, it will not only waste the litigation procedure, but also increase the litigation cost of the parties, which is not conducive to the timely determination and termination of the dispute. Therefore, from the point of view of timely judicial relief to the parties, through the provisions of the Civil Procedure Law of the termination of enforcement of the appropriate interpretation, so that the enforcement court in the parties to the patent has been fully invalid on the ground of the application for termination of enforcement, directly ruled to terminate the enforcement, without waiting for the original enforcement basis of the revocation. At the same time, the defendant whose termination of execution does not affect the original patent infringement judgment shall apply for revocation of the original judgment through the trial supervision procedure.

The impact of the invalid procedure of the (II) State Knowledge Bureau on the procedure of the case under trial.

Generally speaking, if the invalidation procedure is initiated for the patent involved in the litigation procedure, the court should suspend the trial, but it cannot be generalized. According to the provisions of the second judicial interpretation of patent, "if the specification cannot be used to interpret the claims due to obvious violation of the third and fourth paragraphs of Article 26 of the patent law and does not belong to the circumstances stipulated in Article 4 of this interpretation, if the patent right is requested to be declared invalid, the people's court hearing the case of patent infringement dispute shall generally rule to suspend the litigation; If the patent right has not been declared invalid within a reasonable period of time, the people's court may determine the scope of protection of a patent right on the basis of the record of the claims."

According to the first judicial interpretation of patent: the people's court accepts a case of infringement of the patent right of utility model or design, and the defendant requests to declare the patent right invalid within the period of defense, the people's court shall suspend the lawsuit, but in any of the following circumstances, the lawsuit may not be suspended: 1. The search report or patent right evaluation report issued by the plaintiff does not find the cause of invalidation of the patent right of utility model or design; 2. The evidence provided by the defendant is sufficient to prove that the technology used is already known; 3. The evidence or reasons provided by the defendant for requesting the invalidation of the patent right are obviously insufficient; 4. Other circumstances where the people's court considers that the lawsuit should not be suspended.

The case in this article is that the litigation was not suspended in the first instance, and the Supreme People's Court directly rejected the prosecution case in the second instance based on the patent invalidation decision, but at the same time stated in the judgment, "If there is evidence to prove that the decision to declare the patent claim invalid is revoked by the effective administrative judgment, A separate infringement lawsuit can be filed based on the above-mentioned claims." This ends the dispute in this case, but at the same time it paves the way for further rights protection, which is conducive to the economy of the litigation procedure and avoids the protracted patent litigation procedure.

2. Supreme Court Judgment Rules

Trial court: Supreme People's Court

Case No.:(2020) Supreme Law Zhimin Zhong No. 641

Cause of action: Infringement of patent right of utility model

Referee Date: 19 November 2020

The appellant Shanghai Tuoxin Electronic Commerce Co., Ltd. (hereinafter referred to as Tuoxin Company) appealed to the Shanghai Intellectual Property Court on March 30, 2020 against the civil judgment (2019) Hu 73 Zhimin Chu No. 506 made by the Shanghai Intellectual Property Court on March 30, 2020 for a dispute over infringement of utility model patent rights with the appellee Zhongshan Taili Household Products Manufacturing Co., Ltd. (hereinafter referred to as Taili Company). After filing the case on May 20, 2020, the court formed a collegial panel to conduct the trial in accordance with the law. The case has now been closed.

The court also found out that Tuoxin Company filed a request for invalidation with the State Intellectual Property Office on November 23, 2019 on the grounds that claims 1-9 did not comply with Article 26, paragraph 4, of the Patent Law, and the specification did not comply with the provisions of Article 26, paragraph 3, of the Patent Law, requesting to declare all the patent rights involved invalid.

The State intellectual property Office accepted the above-mentioned request for invalidation on December 4, 2019, and at the same time issued a notice of acceptance of the request for invalidation to both parties, and transferred the request for invalidation and a copy of the evidence to the patentee, requiring it to reply within a specified time limit. at the same time, a collegial panel was set up to examine the case.

Tuoxin Company submitted its supplementary opinions on the request for invalidation on December 21, 2019. The reason is that claims 1-3 do not comply with Article 26, paragraph 4, of the Patent Law and Article 20, paragraph 2, of the Detailed Rules for the Implementation of the Patent Law of the People's Republic of China. Claims 1-9 do not comply with the provisions of Article 22, paragraph 3, of the Patent Law, and request to declare all the patents involved invalid. At the same time, evidence 1: the announcement date is September 26, A copy of China's utility model patent with announcement number CN202449337U; Evidence 2: A copy of the Japanese patent with publication number JP2005-104572A and its partial Chinese translation on April 21, 2005; Evidence 3: A copy of the Japanese patent with publication number JP2009-202914A and some Chinese translations on September 10, 2009; Evidence 4: A copy of the authorized patent search report for the patent involved.

On March 10, 2020, the State Intellectual Property Office transmitted a copy of the additional submission of opinion and its evidence to Taili and requested it to respond within a specified period of time. Taili did not respond within the specified period. The oral proceedings were held on 29 May 2020, in the presence of both parties.

On June 17, 2020, the State Intellectual Property Bureau made a review decision on the request for invalidation No. 45066, declaring all the patent rights involved invalid, and issued a document on June 29, 2020.

Taili Company has filed an administrative lawsuit with the Beijing Intellectual Property Court against the above-mentioned No. 45066 invalidation request review decision, and the case is still under trial.

The Court held that the first paragraph of Article 1 of the interpretation of the Supreme People's Court on Several Issues concerning the application of law in the trial of patent infringement disputes stipulates: "the people's court shall determine the scope of protection of patent rights in accordance with the provisions of the first paragraph of Article 59 of the patent law in accordance with the claims claimed by the obligee." Article 2 of the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes stipulates: "If the right holder's claim in a patent infringement lawsuit is declared invalid by the Patent Reexamination Board, the trial of patent infringement disputes The people's court may rule to reject the right holder's lawsuit based on the invalid claim. If there is evidence to prove that the decision to declare the above-mentioned claims invalid has been annulled by an effective administrative judgment, the right holder may sue separately. If the patentee sues a separate lawsuit, the limitation period shall be calculated from the date of service of the administrative judgment referred to in the second paragraph of this article."

3. depth analysis

During the first trial of this case, only the patent invalidation procedure was filed, but no invalidation decision has been made. However, during the second trial of the Supreme People's Court, the State Intellectual Property Office made an invalid decision. At this time, if the second trial is suspended, it will fall into the long process of waiting for an invalid administrative ruling, and lead to various cases entangled with each other, and the litigation procedure is not economical. The Supreme People's Court directly revoked the first-instance judgment and rejected the lawsuit, but at the same time retained the issue of protecting the rights of the patentee if the invalid decision was revoked. It directly stated in the document that "the right holder may sue separately" and did not explain the limitation period (the date of service of the invalid decision administrative judgment).